New Horizons Pty Ltd v Meditex Limited

[1993] ATMO 29

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:Opposition by Meditex Limited to the registration of application 545568 in the name of New Horizons Pty Ltd.

Background
On 18.6.92, trade mark application 545568 was advertised as having been accepted for registration.  The application is in the name of New Horizons Pty Ltd ("the applicant") and the goods specified in the application are "orthopaedic health supports and all other goods in this class".  The trade mark the subject of the application, which was lodged on 13.11.90, is the word URIEL.

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by Meditex Limited ("the opponent"). The opponent claims specifically that "the "URIEL" trade mark is our property".

It is to be noted that the opponent is an Israeli company, and that while regulation 74 requires an opponent to nominate an address in Australia on which documents may be served, the opponent nominated an Israeli address.  It was not until very late in the events which follow that the opponent was asked to nominate an Australian address.  However, as my decision below will show, the picture had by then become one of an opponent acting with complete disregard for the opposition procedures set out in the regulations.

On 23.9.92 the opponent sent a facsimile transmission.  This, much like the covering letter received with the notice of opposition, requested "to receive an official confirmation that the registration of the URIEL trade mark on the name of New Horizons Pty Ltd is cancelled as per our letter dated 06/08/92" 

By letter of 25.9.92 the opponent was sent a copy of the relevant regulations relating to evidence which may be lodged and served and of various provisions regarding the request of hearings and award of costs.  The opponent was warned 'The lodging of the Notice of Opposition does not in itself warrant the "Cancellation of the registration of the above-mentioned Trade Mark Application'.  The opponent was sent a list of patent attorneys.

No evidence in support was served by the opponent on the applicant within the three months allowed by regulation 43.  That three months commenced to run from the date of lodgement of the notice of opposition on 17.8.92, and on 21.8.92 the opponent had been informed, by letter sent to Israel, that the provisions of regulation 43 applied.

After the expiration of the three months, the parties were informed, on 27.11.92, that as no evidence in support of the opposition had been lodged it was presumed that none had been served.  The letter went on to say that if that was so then it was open to the applicant to request that the opposition be heard.

The opponent did not respond to this letter.  On 11.1.93 the parties were warned that "as there has been no response to our overdue evidence notice (dated 27.11.92)" a time and place for a hearing would be appointed and the opposition decided unless good reason was provided within one additional month. 

The applicant had in fact written to request a hearing, and that letter, dated 8.1.93, crossed with our letter of 11 January.  The parties were subsequently advised that the matter had been set down for the hearing session in Melbourne in February 1993. 

The opponent was advised of this development by facsimile on 15.1.93, and as part of the same transmission a copy of our letter of 11.1.93 was sent.

After the matters to be heard at the session were assigned actual times and dates, I realised that the opposition was entirely unsupported and that the one ground of opposition was such that the opposition could not succeed without evidence.  I therefore directed our Opposition Clerk to write to the parties and inform them that unless the opponent immediately advised that it would be attending the hearing I would dismiss the opposition without further notice.

To this the opponent finally replied, via its solicitor in Israel.  It would be entering an appearance at the time and place set down. 

At the hearing, on 12.2.93, the opponent was represented by Mr James Samargis of Counsel on behalf of the firm of Messrs Roth Warren, solicitors.  The applicant was represented by Mr Des Ryan, patent attorney of the firm of Davies Collison Cave. 

At the hearing Mr Samargis commenced by addressing an application which the opponent had made on 9.2.93 for an extension of time of four months to serve evidence in support.  That application is supported by statutory declarations from the opponent's Australian solicitors. 

The Australian solicitors have made some unsupported statements about what they have been instructed and believe to be the extent of the English spoken by Mr Uriel Rosen.  Mr Rosen is a principal of the opponent company.  Also exhibited to the solicitor's declaration are copies of packaging used by the opponent and by the applicant, and of a letter said to constitute an agreement between the parties, and which includes a sentence reading:  "The agent will not manufacture or marketing (sic) products competitive with "MEDITEX" products".

Reduced to its simplest, Mr Samargis conceded that the application for an extension of time was subject to regulation 69 of the Trade Mark Regulations.  Regulation 69 requires that such an extension be requested before the expiration of the time sought to be extended, unless the Registrar is satisfied that special circumstances existed which prevented the application being made within time.  Mr Samargis argued, however, that the application of that regulation should be interpreted liberally, as per Genentech Inc v The WellcomeFoundation Ltd 11 IPR 401.

Mr Samargis argued that the opponent's failure in the present case was not of the sort referred to in Vangedal Nielsen v Commissioner of Patents 33 ALR 144. In that case it is noted that an extension of time is not a way to remedy a mere casual disregard or careless oversight.

He noted that the official letters had at no stage advised the opponent of what steps it should actually take, nor, once the opponent failed to act, had it been advised of the availability of extensions of time under section 130.  These failures, as he deemed them, had been made more unfortunate by the fact that Mr Uriel Rosen, the principal of the opponent company, could not speak English sufficiently well as to be able to deal with complex legal matters.

Mr Samargis then noted that, as per Lyons v Registrarof Trade Marks 1 IPR 416, extensions of time were more the rule than the exception in these matters. As per Shanahan's Australian Law of Trade Marks and Passing Off, page 70, considerable weight is often given in these matters to the allowance of time so that the public interest is protected by not improperly registering trade marks that are not entitled to registration.

His final points were that the delay of the extension - to end roughly one month from the date of the hearing - would not unduly inconvenience the trade mark applicant, and that there were serious matters of proprietorship to be got at if the opposition was allowed to proceed.

Mr Samargis went on to refer me to the matter of Durban Inc v CanpioPty Ltd, 1990 AIPC 90-658. In that case, Assistant Registrar Farquhar agreed with the finding in Genentech v Wellcome, supra.  Mrs Farquhar came to the conclusion that regulation 69 should "be given a broad meaning so as to give effect to the regulation in situations where the person concerned has failed to apply on time owing to some circumstance which has prevented the knowledge of the need to apply coming to that person's attention". 

Mr Ryan countered by attempting to shed some light on the extent of Mr Rosen's English.  He relied here on a declaration by an officer of the applicant company who has had business dealings with Mr Rosen.  However, that issue is of no consequence in the overall scheme of the regulations, which were presumably not framed on the assumption that the entire world speaks English.

The declaration was also relied on by Mr Ryan to provide some counterpoint to the allegations of proprietorship contained in the opponent's declarations.

Decision.
Extension of time.
I refused, having had the submissions of both sides, to grant the extension sought.  There is, quite simply, no "special circumstance" here, and regulation 69 does not authorise me to grant the extension.  With the consent of the parties I have delayed decision of the opposition matter until the decision on the extension question was out of its appeal period.  My reasons for that refusal are incorporated below for the sake of completeness.

The opponent took it upon itself to lodge a notice of opposition.  By doing so it took upon itself the responsibility of conducting the opposition.  Having done so, it elected to repeatedly ignore correspondence from this office. 

As I put the matter at the hearing, some of that correspondence was no more than a record of the conduct of the opposition, to serve a timekeeping function.  It was not meant to assist either party or to offer legal advice. 

On the other hand, the opponent had requested advice that the registration had been "cancelled".  Having twice sought such advice, I think that the opponent would not have rested had it not received the letter of 25.9.92.  Thus, it was on notice that the provisions of the regulations applied.  If the principal of the opponent company could not deal with such comprehensive information, or if it went astray in the mail, it is still the opponent's burden to conduct the opposition in a timely way.  It has simply made a decision not to.

The opponent has had all of the three months allowed to it for the preparation of evidence, and more beyond, to discover that evidence is even necessary.  Right up to the time it was told that it was facing a certain refusal it had done nothing to find out what needed to be done - or, if it had that knowledge, to do it.

While it is often the case that a party opposing the grant of an extension of time alleges that its adversary has been wasting time, it is rare that the evidence in the case will show a repeated and systematic refusal to come to grips with the consequences of lodging a Notice of Opposition.  The first such consequence is that an opponent must comply with the provisions of the regulations themselves.

There is an onus on an applicant to make a case for the grant of an extension (Vangedal Nielsen, supra).  A brief initial failure to come to grips with the evidence requirements, even if deliberate, may not automatically shut the delinquent party off from any further extension of time.  However, once the time allowed is past, the party that has elected to do nothing should on the face of it not be able to point to its own repeated tardiness as a special circumstance entitling it to belatedly seek an extension.

The opposition.
It is long established law, reviewed more recently by Deane J in Moorgate Tobacco Co Ltd v Philip Morris Ltd 156 CLR 414 at 432 - 433, that an opposition based on a proprietorship claim requires the support of evidence.

I cannot consider the various exhibits produced by the opponent to support the extension of time.  They are not evidence properly served in support of the opposition, and consequently the applicant has not been given any opportunity to reply to them in that light.

There being no evidence in support of the opposition, I dismiss the opposition in its entirety.  Subject to any appeal from this decision I direct that the application proceed to registration.

Costs.
Under this heading, Mr Samargis referred me to a decision in relation to an extension of time to oppose an application to remove a trade mark from the register.  That decision was Atomic Skifabrik Alois Rohrmoser v Sasdor Pty Ltd 11 IPR 605. In that case the extension was granted, albeit perhaps partly with the assistance of a further declaration relied on by the extension applicant at the hearing.

The deciding officer, Chief Assistant Registrar Farquhar, concluded with the note that "given that the circumstances which lead to the need to seek an extension and thence to these proceedings were largely due to a lack of preparedness on the part of (Sasdor, the applicant for extension)'s agents, I think it appropriate that no award be made, but that each party bears its own costs".

That decision is akin to a later one on which Mr Samargis also relied:  Application by Jonathan Skeats Design Pty Ltd for an extension of time to serve evidence in support of a standard s.49 opposition, reported at 15 IPR 59. In that case the deciding officer noted that the consequences of the delay for the trade mark applicant were likely not to have been severe. None the less, the applicant had a considerable justification in objecting to the grant of a further two months, on top of 29 months previously allowed to the opponent. Again, no award was made.

Both of those decisions are examples of a modification of the general rule that costs are awarded to the successful party.  In one instance the successful party was particularly remiss in its initial conduct, and relied in addition on material not disclosed before the hearing.  In the other, the successful party was very obviously in need of a warning shot across its bows.  It seems no more than reasonable that those parties, while succeeding in their extension requests, not have costs awarded in their favour.

The present case is not such a one:  the opponent here has failed outright to gain the extension it sought.  Even had it succeeded I think that the cases referred to above would suggest that it could be deprived of an award.  As matters went, I had no hesitation in awarding costs in accord with the official scale to New Horizons Pty Ltd.  I did not, however, go as far as Mr Ryan requested me and award costs at an above-scale rate.  The opponent has been completely unsuccessful, but is not guilty of anything which would justify a punitive award, out of keeping with the norm in these matters.  I now also award costs, as per the scale, to the trade mark applicant in respect of the opposition proceeding.

T. Williams
Hearing Officer

31 March 1993